UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

THIS IS A FINAL ACTION.

 

This letter is in response to Applicant’s communication filed on February 28, 2008.

 

The Applicant has (1) not amended the identification of goods.  The examining attorney has considered the Applicant’s reasoning regarding the amendment of the identification of goods, but has found it to be unacceptable.  For the reasons below, the following requirement is now made FINAL: (1) The Applicant’s identification of goods.  37 C.F.R. §2.64(a).

 

Identification of Goods

 

The identification of goods is unacceptable as indefinite because the term “coolers” is overly broad so that the goods are vague and/or could fall into a different international class. TMEP §§1402.01.  While it is noted that the PTO's classification officer has in the past determined that Applicant's heaters and warmers fall in class 11, the Applicant has added "coolers" to the description of goods in this application, which could possible fall into either International Class 11 or 21. The USPTO’s manual of acceptable goods clearly lists “portable coolers” in International Class 21, and thus, the applicant must specify the nature of the coolers in the instant application.  Suggestions and explanation is incorporated into the identification proposed below.  The Applicant may adopt any or all of the following identifications, if accurate:

 

Warmers and coolers, namely refrigerators, for medical and surgical solutions; Warmers and coolers, namely refrigerators, for medical and surgical equipment.  IC 11

 

 

If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to the appropriate International Classes, and/or amend to add additional classes.  37 C.F.R. Sections 2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.

 

In the identification, the applicant must use the common commercial names for the goods and/or services, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).  Moreover, the identification of goods must also be specific and all-inclusive; therefore, applicant should refrain from using such terms such as “including” or “and the like” and replace this wording with "namely" followed by the good and/or services listed by their common commercial names. 

 

To the extent the suggested identification of goods/services is incomplete or inaccurate, the applicant is advised that the Trademark Acceptable Identification of Goods and Services Manual is accessible via the USPTO homepage at www.uspto.gov under the heading Trademarks and the subheadings Guidance and Manuals and Legal Resources or at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual./ 

 

Please note that, while the identification of goods/services may be amended to clarify or limit the goods/services, adding to the goods/services or broadening the scope of the goods/services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods/services that are not within the scope of the goods/services set forth in the present identification.

 

This requirement is now made FINAL.

 

Proper Response to Final Action

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

/Sanjeev K. Vohra/

Sanjeev K. Vohra

Trademark Examining Attorney

Law Office 110

571.272.5885 -  Work

571.273.5885 - Fax

sanjeev.vohra@uspto.

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.